Aqua Products appealed the PTAB’s denial of its motion to amend its claims in the IPR proceeding on two grounds: (1) that the PTAB misinterpreted the Patent Office’s regulations by impermissibly placing the burden on Aqua to prove that its amended claims were patentable over the prior art; and (2) that the PTAB abused its discretion by denying the motion without considering all of the new limitations and objective indicia of non-obviousness. 

On the first ground, the Federal Circuit reviewed the existing precedent that already addressed this issue and held that, in accordance with the applicable statutes and regulations, the PTAB correctly placed the burden on Aqua to prove that its amended claims were patentable over the prior art.

On the second ground, although Aqua made a number of amendments to the claims, it only addressed one of the amendments in its motion, arguing why that amendment was patentable.  The PTAB considered only the amendment addressed in the motion when denying the motion, while ignoring the other amendments. The Federal Circuit held that PTAB had not abused its discretion, reasoning that, because Aqua bore the burden of proving non-obviousness, the PTAB only could consider the arguments that Aqua raised in its motion.  The PTAB was under no obligation to consider any claim amendment that was not addressed in the motion.  Accordingly, the court affirmed the PTAB’s denial of Aqua’s motion to amend.

In re: Aqua Products, Inc., Case No. 2015-1177 (May 25, 2016); Opinion by: Reyna, joined by Prost and Stark (by designation); Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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